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Welcome to the website of Inoue & Associates

Introductory Statement

Inoue & Associates (located within 1 minute walk from the Japan
Patent Office) is an intellectual property (IP) firm having more than 35 years of experience in international IP business.

We are a modest-sized IP firm composed of members
each having profound knowledge about the legal aspect of IP and the technologies involved therein as
well as excellent skill in actual IP practice,
such that high quality services can be offered constantly at a
reasonable price. Each one of our staff members is so trained as to be
able to always provide high quality IP-related services including production of documents having a clear and logical
construction whether they are in English or Japanese and irrespective of
urgency or technical difficulties involved in particular cases.

Over the years, we have built up a solid reputation for our ability to efficiently acquire
and protect IP rights in Japan.

We are confident that we can provide higher quality IP services than any other IP firms in Japan.

Features of Inoue & Associates

For acquiring and protecting patent rights, everything
starts from the claims and specification of a patent application or a granted patent. Whether a patent application can be granted
with a desired protective scope or a granted patent can survive the challenge from
a third party depends utterly on how good the claims and specification have been
drafted in the first place.

Invalidation of patents, unexpectedly narrow scope of
protection, defeat in infringement suit … all such undesired outcome could have
been avoided only if the patent application had been better drafted.

In the case of Japanese patent applications filed by
non-Japanese entities, the claims and specification are usually translations from
the non-Japanese texts of the first filed foreign applications or PCT
applications.

From this perspective, the translation of the patent
claims and specification is actually more than just a translation and is
practically tantamount to the preparation of a legal document which serves as a
basis for seeking patent protection. For
this reason, the translation should be done with utmost care by IP
professionals such as experienced patent attorneys or paralegals.

And that is what we do and is not done by most of the IP firms in Japan.

Problems related to traditional way of handling patent applications from outside Japan

In typical Japanese IP firms, applications from foreign clients are handled by a team of an IP professional (a patent attorney or a paralegal) and a translator.
For example, the translation of a PCT specification for the Japan
national phase entry is often carried out by one who is the least experienced
in the IP firm or even by an outside translator.

The IP professions work on legal matters based on the translations
prepared by translators which are not always so good or of a rather poor
quality in many cases. This manner of handling patents is disadvantageous not only from the aspect of efficiency but also from the aspect of cost
because poor translations of course make the entire procedure
unnecessarily complicated and high translation fees are required even
if the translations are not so good. Such inefficient and problematic
practice as mentioned above has become customary because many Japanese
IP professionals are not good at writing in English or even reading
English documents, and the English-to-Japanese translations are
generally assigned to beginners.

Consequently, many Japanese IP professionals have to rely on poor
translations in their works, thus falling into a vicious cycle. It is not
surprising even if patent applications from foreign clients are handled
by those who do not fully understand what is disclosed in the original specification nor the clients’ instructions given in
English during the prosecution of the application. For years, this has
been a serious problem as far as the patent applications from outside
Japan are concerned.

Our Solution

Such problems as mentioned above will never happen in
the case of Inoue & Associates. Every one of our staff members has
gone through very hard training and long actual experience to acquire
ability to handle the IP cases alone from drafting patent specifications
whether they are in Japanese or English to dealing with various
procedures relating to patent applications or registered patents. We do
not need and actually do not use any translator. Even in the case of
foreign patent applications (in US, EP etc.) filed by Japanese applicants through our firm, the
US or European patent attorneys often use our draft documents without
any substantial change. That is, the documents drafted by Inoue &
Associates as such are often submitted to the USPTO or the EPO.

There is no magic formula for acquiring good IP rights. This can be
achieved only by hard work and skill obtainable through long and rich
experience as always required in any fields for realizing high quality
services.

Inoue & Associates is one of the very limited number of Japanese IP
firms capable of constantly offering high
quality IP services at a reasonable price. There has been and will be no
compromise in the quality of services we provide to our clients and,
for this very reason, we have been trusted by many foreign clients as
well as domestic clients.

Our skill in IP business is highly esteemed by our clients including two
famous Japanese professors emeriti, Dr. Nobuatsu Watanabe and Dr.
Hidefumi Hirai, whose recommendations are shown in this web site.
Further, if requested, we will be able to show you copies of some
letters from various US and EP attorneys praising our abilities.

Our highly-skilled staff members will surely be of great help to your
establishment of strong and valuable intellectual property portfolio
while reducing cost.

If you are not sure, try us and we promise that we will never fall short of your expectations.
You will immediately realize that we are dedicated to efficient
acquisition and protection of your valuable intellectual properties and
have skills to achieve this goal.

IN THE U.S. PATENT AND TRADEMARK OFFICE

I, Goro Kimura, a Japanese citizen residing at XXXX, Tokyo, Japan, declare and say: I was graduated from the Faculty of Medicine, XXX University in March 2005. In April 2005, I entered XYZ Clinic where I have been practicing the treatment of hallux valgus and ingrown nails. I am well familiar with the present case. I read and understood the Office Action dated XXXX, 2011 and references cited therein.
I have carried out treatments of ingrown nails with the apparatus disclosed in claim 1 of the present application at XYZ Clinic following the instructions given by Mr. Taro Yamada who is the director of the clinic and is the inventor of the present application. Some of the results of the treatments are as reported in the website of XYZ Clinic at http://www.adcdefg-hijk.com. In the website, three cases of treatments are reported. The treatments were performed using an apparatus as shown in Fig. A attached hereto. As can be seen from Fig. A, the apparatus falls within the scope of claim 1 of the present application. As to the three cases (cases 1 to 3), the nails before and after the treatments are shown in Figs. B, C and D attached hereto, which are also shown at the above-mentioned website of XYZ Clinic. In each of the tree treatments, the apparatus as shown in Fig. A was used as mentioned above. Further, the reagents and operations in cases 1 to 3 were substantially the same as recited in Example 1 of the present application (paragraphs [00XX] to [00XX] of the specification of the present application) except that the inclination angle A of the lifting members, the lifting intervals and the nail correcting force were slightly varied depending on the characteristics of the ingrown nails of the patients. As reported in the website of XYZ Clinic, the details of cases 1 to 3 are as follows.

Case 1:Patient's gender and age: A female in her 30's.

Patient's background: The patient wished to avoid a painful treatment because she had heard her acquaintance's report about having received a very painful operation for correcting an ingrown nail at another hospital which seemed to have been carried out without anesthesia. The patient came to XYZ Clinic because she was attracted by the painless treatment of this clinic.

Results: The ingrown nail was corrected as shown in Fig. B by a single treatment which took about only 30 minutes. The patient was satisfied with the results of the treatment because the ingrown nail had been corrected without feeling any pain during and after the treatment.

Case 2:Patient's gender and age: A female in her 40's.

Patient's background: The patient had a previous experience of nail-correction using a wire device which is to be hooked to the edges of the ingrown sides of the nail and is designed to lift the ingrown sides by pulling the hooked portions of the wire toward the center of the nail. However, she needed to go to the hospital so frequently that it became troublesome to her. As a result, the patient stopped going to the hospital before the completion of the nail correction. The patient also had a previous experience of nail-correction using a correction plate which is to be adhered on the surface of an ingrown nail and lifts the ingrown sides of the nail by the spring force of the plate, but the plate came off from the nail soon.

Results: The ingrown nail was corrected as shown in Fig. C by performing twice an approx. 30-minute treatment, and the patient was pleased with the result.

Case 3:Patient's gender and age: A female in her 50's.

Patient's background: Previously, the patient had her ingrown nail corrected by treatment using a wire device similar to that used by the patient of case 2, which treatment lasted about 18 months. However, the ingrown nail recurred after the termination of the treatment.

Results: The ingrown nail was corrected as shown in Fig. D by a single approx. 30-minute treatment. During and after the treatment, the patient did not feel any pain nor uncomfortable feeling.

Finally, it should be added that almost all of the 900 patients having received this treatment so far were very satisfied with the results.

From the above, it is apparent that the apparatus of the present invention surely enables the correction of an ingrown nail within a very short period of time, 1.e., within about 30 minutes to about 1 hour, with a very simple operation and without causing any pain nor uncomfortable feeling to the patent. Thus, the apparatus of the present invention has realized a surprisingly easy and effective treatment which is far more advantageous than the conventional surgical removal method which is complicated, cumbersome and is accompanied by pain during or after the surgery and risk of microbial infection, and the conventional treatments using various correction devices or apparatuses which are in many cases not so effective and require very long treatment periods.

The undersigned petitioner declares that all statements made herein of his own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any patent issuing thereon.

IN THE U.S. PATENT AND TRADEMARK OFFICE

I, the undersigned, Ichiro SUZUKI, a Japanese citizen, residing at xxxxx, Akasaka 1-Chome, Minatoku, Tokyo 107-0052 Japan, hereby declare and state that:I took a master course at the Department of Applied Chemistry, School of Engineering, ABCDE University, and I was graduated therefrom in March 1990.［＊博士号取得者の場合： I was graduated in 1985 from the Department of Applied Chemistry, Faculty of Engineering, ABCDE University, and took a doctor course in the Graduate School of Engineering, ABCDE University, majoring in applied chemistry, from which I was granted the degree of doctor in 1990.］I entered FGHIJ Polymer Chemical Co., Ltd. in April 1990.I have been engaged in the research and development of high performance polyester resins from April 1990 to date.I am one of the applicants of the above-identified application and I am well familiar with the present case.
I have read and understood the Office Action dated October 10, 2007 and the references cited therein.I carried out Examples 1 to 25 and Comparative Examples 1 to 20 of the present application, and the results are as described on pages 160 to 220 of the specification of the present application.I have made observations, with reference to Examples 1 and 2 and Comparative Examples 1, 4 and 9 of the present application, to show that both of the side reaction index (C) requirement (i.e., less than 0.055) of step (1) and the "molten state" requirement of step (2) of the method of claim 4 of the present application must be satisfied for producing the polyethylene terephthalate resin of the present invention which possesses all excellent properties recited in claim 1 of the present application. (Hereinafter, the former requirement is simply referrred to as "side reaction index (C) requirement", and the latter requirement is simply referred to as "molten state requirement".) The method and results are as described in a paper attached hereto and marked "Exhibit 1".

From the results of Exhibit 1, it can be fairly concluded:that, as shown in Table A in Exhibit 1, the process employed in each of Examples 1 and 2 satisfies all requirements of claim 4 of the present application, whereas:

each of Comparative Examples 1 and 4 employs a crude PET resin having a C value of 0.082 and, hence, do not satisfy the side reaction index (C) requirement, and

that the results of Examples 1 and 2 (i.e. the properties of the PET resins obtained) are excellent; specifically, the obtained PET resins possess all of the target properties recited in claim 1 of the present application (Table B in Exhibit 1);

that the results of Comparative Examples 1 and 4 are poor in that the PET resins obtained in Comparative Examples 1 and 4, respectively, exhibit cyclic polymer contents (% by weight) of 3.45 and 3.34, which exceed the upper limit (not greater than 3 % by weight) recited in claim 1 of the present application (Table B in Exhibit 1);

that the results of Comparative Example 9 are poor in that the obtained PET resin not only exhibits a molecular weight distribution (Mw/Mn) of 3, which exceeds the upper limit (from 2 to 2.7) recited in claim 1 of the present application, but also exhibits disadvantageously high crystallinity of 55 (which causes high brittleness) (Table B in Exhibit 1);

that, thus, through a comparison between Examples 1 and 2 and Comparative Examples 1 and 4, it is clear that the polyethylene terephthalate resin of the present invention cannot be obtained when the crude PET resin used does not satisfy the side reaction index (C) requirement; in other words, the side reaction index (C) requirement is critical for producing the polyethylene terephthalate resin of the present invention which possesses all excellent properties recited in claim 1 of the present application;

that, further, through a comparison between Examples 1 and 2 and Comparative Example 9, it is clear that the polyethylene terephthalate resin of the present invention cannot be obtained by a solid-phase polymerization process that is a representative conventional process; in other words, the molten state requirement is also critical for producing the excellent polyethylene terephthalate resin of the present invention;

that Comparative Example 9 also shows that, even in the case where the requirements of step (1) of the method of claim 4 (including the side reaction index (C) requirement) are satisfied, the excellent PET resin of the present invention cannot be obtained when the molten state requirement is not satisfied;

that thus, it is apparent that the polyethylene terephthalate resin of the present invention which possesses all excellent properties recited in claim 1 of the present application can be obtained only when the process employed satisfies both of the side reaction index (C) requirement and the molten state requirement.

The undersigned petitioner declares that all statements made herein of his own knowledge are true and that all statements made on information and belief are believed to be true; and further that these statements were made with the knowledge that willful false statements and the like so made are punishable by fine or imprisonment, or both, under Section 1001 of Title 18 of the United States Code and that such willful false statements may jeopardize the validity of the application or any patent issuing thereon.

Recommendations

Mr. Inoue, the Senior Partner, is my former student. He has both excellent linguistic ability and excellent expertise. The staff of Inoue & Associates are well-trained by Mr. Inoue, and the high quality services provided by Mr. Inoue and his staff are self-explanatory from the documents made by them. From my experience, I firmly believe that they will help you to promptly and surely acquire intellectual property rights, based on adequate judgment made by fully utilizing their professional skills in combination with their rich experience in pursuit of patent rights in many countries for many years.

Mr. Inoue, the Senior Partner, and his staff are familiar with foreign patent laws and patent practices. Further, the quality of their services based on accurate understanding of technical background and excellent linguistic ability is prominent in this business. In addition, Mr. Inoue already has his appropriate successor and I, therefore, trust Inoue & Associates for their excellent procedures of filing patent applications through reliable prosecutions for grant of patents.

Legal Standard for Enablement（実施可能性の法律的基準について）

The Federal Circuit has repeatedly held that "the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without 'undue experimentation'." In re Wright, 999 F.2d 1557, 1561, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993).（連邦巡回裁判所はたびたび、以下の趣旨の判断を示してきた：「明細書は、当業者が『過度な実験』を行なうことなく本発明の全範囲を実現して使用するための方法を教示しなければならない」）

Nevertheless, not everything necessary to practice the invention need be disclosed. In fact, what is well-known is best omitted. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991).（しかし、発明の実施に必要な全てを開示する必要はない。実際、周知のものは省略しても構わない。）

All that is necessary is that one skilled in the art be able to practice the claimed invention, given the level of knowledge and skill in the art. Further the scope of enablement must only bear a "reasonable correlation" to the scope of the claims. See, e.g., In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970).（必要なことは、当業界の知識と技術の水準に鑑みて、クレームされた発明を当業者が実施できるように記載されていることだけである。）

As concerns the breadth of a claim relevant to enablement, the only relevant concern should be whether the scope of enablement provided to one skilled in the art by the disclosure is commensurate with the scope of protection sought by the claims. In re Moore, 439 F.2d 1232, 1236, 169 USPQ 236, 239 (CCPA 1971).（実施可能性との関連におけるクレームの広さについては、明細書の開示により当業者に提供された実施可能性と、クレームが要求する保護の範囲とが一致していさえすればよい。） How a teaching is set forth, by specific example or broad terminology, is not important. In re Marzocchi, 439 F.2d 220, 223-24 169 USPQ 367, 370 (CCPA 1971).（教示の記載の仕方については、どのように記載されていても構わず、具体的実施態様による記載でもよいし、広い用語による記載でもよい。）

Legal Standard for Determining Anticipation（新規性判断の法律的基準について）

"A claim is anticipated only if each and every element as set forth in the claim is found, either expressly or inherently described, in a single prior art reference." Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed. Cir. 1987).（クレームに記載される全ての要素が明示的または潜在的に単一の先行技術文献に記載されている場合にのみ、クレームの新規性が欠如する。）

"When a claim covers several structures or compositions, either generically or as alternatives, the claim is deemed anticipated if any of the structures or compositions within the scope of the claim is known in the prior art." Brown v. 3M, 265 F.3d 1349, 1351, 60 USPQ2d 1375, 1376 (Fed. Cir. 2001) （クレームが複数の構造や組成物を含む場合には、複数の構造または複数の組成物のいずれか１でも先行技術文献に記載されているならば、クレームの新規性が欠如する。）

The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required. In re Bond, 910 F.2d 831, 15 USPQ2d 1566 (Fed. Cir. 1990).（クレームが要求する通りに要素が配置されていることが必要であるが、用語が同一である必要はない。）

Legal Standard for Prima Facie Obviousness （一応の自明性の判断の法律的基準について）

MPEP § 2141 sets forth the guidelines in determining obviousness. First, the Examiner has to take into account the factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459 (1966), which has provided the controlling framework for an obviousness analysis.（MPEP § 2141には、自明性を判断するガイドラインが示されている。審査官は、まず、グラハム事件で採用された事実認定基準（いわゆる、Grahamテスト）を考慮しなければならない。） The four Graham factors are（４つのGrahamテストは以下の通りである）:

(a) determining the scope and contents of the prior art（先行技術の範囲と内容を決定すること）;

(b) ascertaining the differences between the prior art and the claims in issue（先行技術と当該クレームとの差を明確にすること）;

(c) resolving the level of ordinary skill in the pertinent art（当業者の技術水準を確定すること）; and

Second, the Examiner has to provide some rationale for determining obviousness.（次に審査官は、自明性を支持するための何らかの論理付けを提示することが必要である。） MPEP § 2143 sets forth some rationales that were established in the recent decision of KSR International Co. v Teleflex Inc., 82 USPQ2d 1385 (U.S. 2007)（MPEP § 2143には、KSR事件で確立された論理付けが示されている。）. Exemplary rationales that may support a conclusion of obviousness include（自明性を支持するための典型的な論理付けは以下の通りである。）:

(a) combining prior art elements according to known methods to yield predictable results（先行技術の要素を公知の方法で組み合わせて予想可能な結果を得ること）;

(b) simple substitution of one known element for another to obtain predictable results（ある公知の要素を他の要素で単純に置換して予想可能な結果を得ること）;

(c) use of known technique to improve similar devices (methods, or products) in the same way（公知技術を用いて類似の装置（方法や製品）を同様に改善すること）;

(d) applying a known technique to a known device (method, or product) ready for improvement to yield predictable results（改善可能な状態にある公知の装置（方法や製品）に公知技術を適用して予想可能な結果を得ること）;

(e) "obvious to try" - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success（「試みることが自明」－成功するという合理的な期待を持って、特定された予測可能な有限個の解決方法から選択すること）;

(f) known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art（ある技術分野において公知のものは、設計上の動機やその他の市場の力に基づいて、同じ技術分野や異なる技術分野で使用するためのバリエーションが当業者によって予測可能であれば、そのようなバリエーションを促すかもしれない。）; and

(g) some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.（先行技術文献を改変したり先行技術文献の教示を組み合わせてクレームされた発明に到達するように当業者を導いたであろう、先行技術における教示、示唆または動機。）

As the MPEP directs, all claim limitations must be considered in view of the cited prior art in order to establish a prima facie case of obviousness. See MPEP § 2143.03.（MPEPが示すように、一応の自明性を確立するためには、引用例に鑑みてクレームの全ての限定事項を考慮する必要がある。）

英訳文：

Further, as explained in item A above, those skilled in the art can readily anticipate that,
when two types of resins which are incompatible with each other are melt-kneaded,
a resin having a smaller volume ratio is very likely to form an island
structure in the sea portion (continuous phase) formed by another resin having a
larger volume ratio. In addition, the migration of a third component (such as an
electroconductive substance) which has originally been contained in a resin forming
a sea phase into an island phase requires not only the contact between the island
phase (moving through the sea phase) with the third component but also the
diffusion of the third component at the sea phase-island phase interface into the
island phase (further, it is possible that the third component which has once
migrated into the island phase returns to the sea phase although the extent of the
migration may vary). In view of the above, it is recognized that those skilled in the
art would hardly expect a migration of a large amount of a third component (such as
an electroconductive substance) which has originally been contained only in a resin
forming a sea phase into an island phase during the melt-kneading performed by an
extruder or the like only for a relatively short time, which results in the presence of
more than half amount of the third component in the island phase. Therefore, the Board of Appeal has not erred in recognizing that “localized dispersion of the
electroconductive substance is maintained”.